Sean D. O'Brien
About Sean
Sean O’Brien assists clients with obtaining, maintaining, and enforcing patent and trademark rights in the U.S. and abroad. He also advises and represents clients in opposition and cancelation proceedings before the Trademark Trial and Appeal Board (TTAB) as well as for post grant review and inter partes review patent proceedings before the Patent Trial and Appeal Board (PTAB). In addition, Sean negotiates intellectual property agreements, including licenses, and he resolves patent, trademark, copyright, and trade secret disputes outside of litigation. Sean also asserts and defends intellectual property infringement matters through litigation.
Before becoming a lawyer, Sean worked as a mechanical design engineer and project engineer at an aerospace company, where he designed, tested, and resolved manufacturing problems for antiskid brake control valves. He also worked in the automotive industry with door seal and wiring harness technologies, which included his first professional exposure to patent law. Sean’s undergraduate degree is in engineering, with a focus on fluid dynamics and thermodynamics.
Drawing on his prior broad experience, he aims to meet his client’s intellectual property goals in a candid, adept manner. Sean leads the firm’s intellectual property practice as well as its renewable energy team.
Representative Experience
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Technology Plus
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Defend software as a service (SaaS) provider in trademark infringement litigation resulting in a successful resolution through mediation.
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Advise manufacturer of video game controllers on patent protection for inventions and trademark protection for brands; clear product and branding ideas; prepare and file patent and trademark applications around the world.
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Emerging Businesses Plus
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Counsel pharmaceutical developer on intellectual property aspects of international license and supply agreement; negotiate and draft aspects of the license agreement.
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Prepare and prosecute patent applications for developer of portable, pressurized beverage containers.
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Sustainable Products Plus
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Advise supplier of compostable tableware and containers on all aspects of intellectual property protection and enforcement, including worldwide trademark portfolio, international distribution agreements, and risk evaluation related to intellectual property.
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Insights from Sean
- “Why the Law Encourages Copycats (And What You Can Do about It),” Miller Nash, IP & Technology Law Trends (Feb. 2023)
- “U.S. Patent and Trademark Office Issues New Examination Guidelines in View of Booking.com,” Miller Nash Graham & Dunn, IP Law Trends (Nov. 2020)
- “Enforcing Trademarks in Online Marketplaces,” LinkedIn (Nov. 2020)
- “Trademark Infringement Risk for U.S. Goods Manufactured Abroad,” Miller Nash Graham & Dunn, IP Law Trends (Aug. 2020)
- “Supreme Court Reinforces Position That the Patent Office Has the Final Say on Whether to Initiate an Inter Partes Review,” Miller Nash Graham & Dunn, IP Law Trends (Apr. 2020)
- “‘Secret Sales’ of an Invention Continue to Be a Potential Bar to Patent Rights, Even After the America Invents Act,” Miller Nash Graham & Dunn, IP Law Trends (Jan. 2019)
- “U.S. Trademark Office Now Auditing Affidavits of Use,” LinkedIn (Jan. 2018)
Outside the Office
Outside of work, Sean enjoys watching his daughter discover the world, skiing, hiking, live music, watching soccer, and learning to play the guitar.